WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Domains By Proxy, LLC / Robert Simpson, Covetrus Group Ltd

Case No. D2021-2187

1. The Parties

The Complainant is Philip Morris USA Inc., United States of America, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Domains By Proxy, LLC / Robert Simpson, Covetrus Group Ltd, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <marlboro-group.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2021. On July 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 13, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 15, 2021.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2021. The Response was filed with the Center on July 27, 2021.

The Center appointed Jeremy Speres as the sole panelist in this matter on August 25, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

MARLBORO cigarettes have been produced and sold by the Complainant (and various predecessor entities) worldwide since 1883. The Complainant owns many trade mark registrations around the world for the MARLBORO mark, including, most relevant for present purposes, United Kingdom trade mark registration no. 00000735157 MARLBORO in class 34 covering cigarettes, bearing a 1954 registration date.

Based on the WhoIs information received from the Registrar and the limited Response, the Respondent is Robert Simpson, an individual residing in the United Kingdom representing Covetrus Group Ltd, a private company incorporated in the United Kingdom.

The Domain Name was registered on May 3, 2021, and, as at the date of filing of the Complaint and drafting of this Decision, redirected to <vaping-and-smoking-sales.com> at which the Complainant’s MARLBORO cigarettes are offered for sale, in addition to tobacco products competing with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows: the Domain Name is confusingly similar to its well-known trade mark; the Respondent has used the Domain Name to redirect users to a website that offers products competing with the Complainant for its own commercial gain which cannot confer rights or legitimate interests; and the Respondent registered and has used the Domain Name in bad faith because the sale of the Complainant’s products using the Domain Name shows an awareness of the Complainant’s mark, and the Respondent has relied on confusion with the Complainant’s mark in order to sell products competitive with the Complainant.

B. Respondent

The Respondent submitted a very brief Response, essentially stating as follows. The Complainant’s mark is well-known but there will be no confusion with the MARLBORO mark given that “Marlboro Group” is not used on the Complainant’s products, and if it were, consumers would recognise the difference. Additionally, the Respondent has rights and legitimate interests in the Domain Name by virtue of the incorporation of the United Kingdom company Marlboro Group Ltd, which trades in ecommerce.

6. Discussion and Findings

A. Identical or Confusingly Similar

Where the trade mark is recognisable in the domain name, the addition of other terms does not prevent a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8). The Complainant’s mark is the first and most prominent element of the Domain Name and the remainder, apart from the generic Top-Level Domain and hyphen, consists of the common term “group”, which does not render the Complainant’s mark unrecognisable. The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant’s mark was registered and, as admitted by the Respondent, well-known in the Respondent’s territory long prior to registration of the Domain Name. The Domain Name is confusingly similar to the Complainant’s mark and has been used to sell competing products in addition to those of the Complainant, and the Complainant has certified that the Domain Name is unauthorised by it. The Complainant has thus made out a prima facie case that the Respondent lacks rights or legitimate interests and the burden of production shifts to the Respondent (WIPO Overview 3.0 at section 2.1).

The Respondent asserts that it has rights and legitimate interests in the Domain Name by virtue of his incorporation of the United Kingdom company Marlboro Group Ltd. The Respondent has submitted sufficient proof of incorporation of this company. However, there are numerous problems with this assertion.

Firstly, the Panel has independently considered the United Kingdom companies registry (Companies House) entries for Marlboro Group Ltd. UDRP panels may undertake limited factual research into matters of public record (WIPO Overview 3.0 at section 4.8). The company was incorporated on May 5, 2021, two days after the Domain Name was registered, thus any rights or legitimate interests that may have resulted from the company registration alone had not accrued when the Domain Name was registered. The Panel recognises that, generally, the relevant date for assessing rights and legitimate interests is the date of filing of the Complaint (see WIPO Overview 3.0 at section 2.11), however, for purposes of paragraph 4(c)(ii) of the Policy at least, the relevant date is the date of registration of the domain name in question (see Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672).

Secondly, the Panel is aware that company name registrations in the United Kingdom do not provide proprietary rights in the name. Rather, the registration of a company name is a legislative requirement of incorporation. The Panel agrees with those UDRP Panels that have ruled that the mere registration of a company cannot per se demonstrate that a respondent has rights or legitimate interests (see Barclays Bank PLC v. New City Resources Inc., WIPO Case No. D2011-1584; Chicago Mercantile Exchange Inc., CME Group Inc. v. Globex Biz Solutions, WIPO Case No. D2015-0671; and Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672).¹ Per the Panel in Chicago Mercantile Exchange Inc. supra:

“If the mere registration of a company name (as opposed to an examined trade mark) was sufficient in itself to show rights or legitimate interests it would be possible for a professional cybersquatter to defeat any UDRP case merely by obtaining an unexamined company name registration upon the commencement of a claim against it.”

Thirdly, the Panel has independently established from the Companies House database that the Respondent, Mr Simpson, resigned as a director of Marlboro Group Ltd on August 31, 2021, leaving the company with no directors. The United Kingdom Companies Act 2006, section 154, requires a private company to have at least one director, thus the company would appear to be in breach of its statutory obligations. This combined with Mr Simpson’s resignation and the absence of any explanation of the company’s affairs in the record suggests that Mr Simpson has no real interest in pursuing the company as a bona fide trading entity, and that the company may well have been incorporated solely for the purposes of legitimising the Domain Name (discussed below).

Fourthly, the Panel has independently considered the Respondent’s (Mr Simpson’s) company registration history with Companies House. Mr Simpson was listed as a director of 12 separate private companies, including Marlboro Group Ltd, however, he resigned from all of them on either August 31 or September 3, 2021. Numerous such companies prominently incorporate well-known trade marks as the first and dominant element of their names, as with Marlboro Group Ltd:

The Panel has independently searched public WhoIs facilities for domain names corresponding to these company names and found numerous such domain names ostensibly registered by the Respondent:

All the domain names listed in the table above were registered using the same registrar, GoDaddy, all either in May or January 2021, with two on the same day.

The uses, connections, and other similarities between the companies listed in the first table and the domain names listed in the second table cannot be mere coincidence. They are such that it is more probable than not that the same registrant is behind all the company and domain names, and that the companies have been registered purely to provide a veneer of rights or legitimate interests to the domain names, which take advantage of well-known trade marks for commercial gain.

The Respondent’s reliance on a company registration forming part of a scheme such as that identified above, leveraging confusion with well-known brands for commercial gain, to circumvent the UDRP cannot be bona fide and cannot support a claim of rights or legitimate interests. The WIPO Overview 3.0 at section 2.12.2 states as much in respect of respondent-owned trade marks, and the same should likewise hold for company registrations.

To the extent that the Respondent may be considered a reseller of the Complainant’s MARLBORO products, Panels have recognised that resellers using a domain name containing a complainant’s mark to undertake sales related to the complainant’s goods or services may be making a bona fide offering and thus have a legitimate interest in such domain name. However, in this instance, the Respondent’s conduct fails the widely accepted test postulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, given that the Respondent does not use the site to sell only the trade marked goods.

The Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

It is clear that the Respondent has engaged in a pattern of bad faith registration and use of third party trade marks and this case is merely a continuation of that pattern. A pattern of bad faith conduct is relevant in assessing bad faith (WIPO Overview 3.0 at sections 3.2.1 and 3.2.2), and paragraph 4(b)(ii) of the Policy is eminently applicable here.

The Respondent has offered the Complainant’s MARLBORO products for sale using the Domain Name, and the Respondent admits that the Complainant’s mark is well-known. In the circumstances, and in the absence of an explanation by the Respondent for its choice of a domain and company name confusingly similar to the Complainant’s mark, prior knowledge and targeting of the Complainant is strongly indicated.

The Respondent’s use of a Domain Name confusingly similar to the Complainant’s well-known mark to redirect users to a site offering products that compete with the Complainant falls within paragraphs 4(b)(iii) and (iv) of the Policy (WIPO Overview 3.0 at section 3.1.4; Edmunds.com v. Ultimate Search, Inc, WIPO Case No. D2001-1319; Nikon, Inc and Nikon Corporation v. Technilab, Inc, WIPO Case No. D2000-1774).

The Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <marlboro-group.com> be transferred to the Complainant.

Jeremy Speres
Sole Panelist
Date: September 6, 2021

¹ The Panel notes that the auDA Overview of Panel Views on Selected auDRP Questions, First Edition at section 2.7B takes the same position in respect of company names. Although not directly applicable to disputes under the UDRP, the considerations appl icable to the auDRP and UDRP second elements are identical, and this lends support to the Panel’s view.